WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tiffany (NJ) LLC, Tiffany and Company v. Gao Lin/Simon/ Dns Manager, Absolutee Corp. Ltd. Case No. D2009-0430 1. The Parties
The Complainants are Tiffany (NJ) LLC, Parsippany, New Jersey, United States of America; Tiffany and Company, New York, United States of America, represented by Arnold & Porter, United States of America.
The Respondents are Gao Lin/Simon, Zhengzhou, Henan, People's Republic of China; DNS Manager, Absolutee Corp. Ltd., Hongkong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with 35 Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 3, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 3, 2009, eNom transmitted by email to the Center its verification response confirming that Hua Zhang was listed as the registrant and providing the contact details. On April 15, 2009, the Center noted that the registrant and the registrar of the disputed domain name appeared to be different from the ones previously confirmed. On the same day, the Center transmitted an email to eNom seeking the clarification. eNom confirmed on the same day that the disputed domain name had been transferred to another registrant and registrar. On April 16, 2009, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On April 22, 2009, 35 Technology Co., Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on May 1, 2009.
On April 24, 2009, the Center communicated to the parties in Chinese and in English concerning the language of proceeding. On May 1, 2009, the Complainants submitted the request that English shall be the language of proceeding. The Respondents did not submit any comment by the due date.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 25, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on June 3, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
One Complainant, Tiffany and Company, is the registrant of the mark TIFFANY throughout the world. The mark TIFFANY is exclusively used by the Complainants, Tiffany (NJ) LLC and Tiffany and Company.
The Respondents, Gao Lin/Simon registered the disputed domain name on December 17, 2007. The Respondent, DNS MANAGER, ABSOLUTEE CORP. LTD., is the WhoIs privacy service provided by the Registrar. 5. Parties' Contentions A. Complainants
The Complainants state that the mark TIFFANY has been registered and used on jewelry, silver and other decorative objects for over 170 years.
The Complainants contend that the disputed domain name is confusingly similar to the TIFFANY mark in which the Complainants have rights.
The Complainants contend that the Respondents have no rights or legitimate interests in respect of the disputed domain name.
The Complainants contend that the disputed domain name was registered and is being used in bad faith.
The Complainants request that the disputed domain name be transferred to them upon the order of the Panel. B. Respondents
The Respondents did not reply to the Complainants' contentions. 6. Discussion and Findings A. Respondents and Privacy Service
The original registrant identity and subsequent change described in the Procedure History above suggest that this is a case in which the genuine registrant of the disputed domain name uses the privacy service to cover up its information on the WhoIs.
Previous panels in comparable cases have treated both the initially listed privacy service provider and the subsequently disclosed registrant as the Respondents. See e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 and Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463.
In the present case, DNS Manager, Absolutee Corp. Ltd, is listed as the registrant of record in the WhoIs at the time the Complaint was filed. The registrar appears to have subsequently disclosed the identity of the underlying/ genuine registrant, Gao Lin/Simon, who has also been named as a Respondent by the Complainants in the amendment to the Complaint. Accordingly, it is in the Panel's view appropriate for both of these to be included as the Respondents in the present case. B. Language of Proceedings
The language of the Registration Agreement for the disputed domain name, as confirmed by the Registrar, is Chinese. The Complainants request that the language of proceeding be English and present the reasons. The Respondents do not contest Complainants' assertion.
According to the Rules, paragraph 11(a) and paragraph 10(b), the Panel shall take into account all the circumstances to decide if the language of the proceeding should be other than the language of the Registration Agreement and ensure the fair treatment of both Parties. In the present case, the Panel finds that the Respondents have sufficient capacity to present its case in English. The facts that the website at the disputed domain name displays all the contents in English, that the Respondents did not contest against the proceedings being in English and that no Response is submitted in Chinese shows that the Respondents will not be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the circumstances of the proceeding, this Panel determines under the Rules, paragraph 11(a), that English shall be the language of the proceeding. C. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4 (a)(i), a complainant must prove it enjoys the relevant trademark right and the disputed domain name is identical with or confusingly similar to the complainant's trademark or service mark.
The Panel finds that the Complainants hold trademark registration in the mark TIFFANY. The issue then should be focusing on whether the disputed domain name, which consists of , is confusingly similar to the Complainants' mark TIFFANY.
Apart from the generic top-level domain suffix “.com”, the disputed domain name is “tiffanyline”, in which “tiffany” is identical with the Complainants' registered trademark and “line” which seems an ordinary descriptive term with little distinctive function.
It is established by numerous decisions made under the Policy that adding such a descriptive word to a complainant's mark will usually not preclude a finding of confusing similarity (see Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans),WIPO Case No. D2002-0367). The Panel finds that the disputed domain name that comprises of the Complainants' registered trademark TIFFANY in its entirety and a descriptive term “line” is confusingly similar to the Complainants' mark.
The Complaint has proven the first element required by paragraph 4(a) of the Policy. D. Rights or Legitimate Interests
The Complainants assert that the Respondents have no rights or legitimate interests in the disputed domain name and, as stated above, the Respondents did not provide any information to the Panel asserting any rights or legitimate interests they may have in the disputed domain name.
It is apparent from the Complaint that there is no connection between the Respondents and the Complainants or the Complainants' business. The Respondents do not rebut the Complainants' prima facie case that the Respondent lacks rights or legitimate interests in the domain name, such as its contention that the disputed domain name is not used in connection with any bona fide offering of goods or services. The lack of a Response leads the Panel to draw the relevant negative inferences in light of the circumstances.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name. Accordingly, the Complaint has proven the second element required by paragraph 4(a) of the Policy. E. Registered and Used in Bad Faith
The Complainants contended the Respondents registered and are using the disputed domain name in bad faith. The Respondents do not respond.
Through examining the evidence submitted, the Panel is impressed by the facts that the disputed domain name is being used for selling what appear to be counterfeiting Tiffany products via the website of “www.”. The website not only repeatedly uses the Complainants' mark TIFFANY but pretends to be hosted, endorsed or sponsored by Tiffany & Co., one of the Complainants.
As the registrant of the disputed domain name, the Respondents should be fully responsible for any use of the domain name. The use of the disputed domain name for the website that is selling counterfeit products to TIFFANY is highly likely to attract and confuse the Internet users with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name's website or of the products on the website.
The Panel finds that it is adequate to conclude that the Respondents have registered and are using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv).
Therefore, the Complaint has successfully proven the third element required by paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainants, Tiffany (NJ) LLC and Tiffany and Company.
Dr. Hong Xue
Sole Panelist
Dated: June 17, 2009
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